The (99) Problems With Jay-Z's Trademark Lawsuit Against David Ortiz

Rapper and entertainment mogul Jay-Z sued Boston Red Sox slugger David Ortiz in federal court in New York on Thursday for naming his Dominican Republic nightclub "Forty Forty." The rapper claims that Ortiz intended to trade on the fame of Jay-Z's "40/40" clubs in cities including New York, Las Vegas, and Atlantic City, and that Ortiz has therefore infringed his registered trademarks in "40/40" and "40/40 Club." Jay-Z wants over $5 million to put a stop to what he calls Ortiz's "brazen and unauthorized attempt to trade on the value and goodwill that [he] has cultivated in the 40/40 Marks...." He claims that Ortiz was well aware of his 40/40 clubs because he patronized the New York establishment several times, while the Red Sox were playing the Yankees and during the All-Star Break. In a bold mash-up of hip hop and Biblical allusion befitting his inimitable style, Hova's lawyers claim that Big Papi and his confederates are "trying to reap where they have not sown by using Plaintiff's 40/40 Marks without permission...."

The case raises a host of legal questions. For starters, Ortiz's nightclub is located in Santo Domingo in the Dominican Republic. Although Jay-Z alleges that Big Papi's club has gained media attention in the U.S., the first this commentator heard about it was as a result of Jay-Z's own lawsuit. I imagine I'm not the only one. Does it really infringe on Jay-Z's trademarks for Ortiz to open a nightclub called "Forty Forty" in his home country, where Jay-Z does not have any clubs? It begs the question of how far U.S. trademark law extends, and trying to impose our laws on foreign countries leads to a whole host of other problems. Anticipating these problems, Jay-Z alleges (in a footnote) that he's really only suing over Big Papi's website advertising the club, which is available in the U.S. and anywhere else with internet access. (The website is entirely in Spanish--the language of the Dominican Republic--with the lone exception of the words "Forty Forty" and "Home.") Jay-Z is on the case, though; apparently he is already suing Ortiz in the Dominican Republic over the "unlawful operation of the Dominican nightclub."

I don't pretend to know anything about Dominican law, but I do know that Jay-Z faces some serious procedural hurdles in the U.S. case. One of the first will be convincing the judge that the website alone is enough to subject Ortiz to the New York court's jurisdiction. What is worse, the complaint does not even allege where Ortiz lives or what his citizenship is. I don't want to get too technical here, but bear with me. Federal courts have jurisdiction over cases arising under federal law (so-called "federal question" cases) or cases between citizens of different states or between U.S. citizens and foreign citizens ("diversity" cases). Jay-Z alleges both federal question and diversity as bases for the New York court to exercise jurisdiction over the case, but he fails to allege Ortiz's citizenship. That's a problem."

Another problem is that, in order to haul Ortiz into court in New York, Jay-Z has to show that Ortiz has enough contacts with New York to subject him personally to that court's jurisdiction. On this point, Jay alleges only that Ortiz "is an individual who plays professional baseball for the Boston Red Sox" and that he earns "substantial compensation in [New York] as a result of the fact that his team plays between nine and thirteen games per season at Yankee Stadium in the Bronx." Jigga what? I highly doubt the fact that Ortiz plays a few games a year at Yankee Stadium--out of a 182-game season--means that he earns "substantial compensation" in New York or is enough to force Ortiz to defend himself in a New York court. Ortiz has to have some meaningful contacts with New York beyond merely being present there a few times a season, and it won't do to just serve him with papers the next time the Sox are in town.

Putting aside these procedural problems, let's move on to the substantive ones. The basis of the complaint is that the website promoting Big Papi's club infringes on Jay-Z's trademarks for "40/40" and "40/40 Club." "Forty Forty" is certainly a little close to "40/40" for comfort, but trademark infringement is not that easy to prove. Jay-Z's lawyers will have to convince the jury that people are, or are likely to be, confused that Ortiz's nightclub in the Dominican Republic is associated with or endorsed by Jay-Z and his 40/40 franchise.

But remember: Ortiz plays for the Red Sox. Jay-Z has a lot of athlete friends and a globe-spanning entertainment empire, but he is a well-known and fiercely proud Yankees fan who is often seen sporting Yankees regalia. He even boasts in his recent hit "Empire State of Mind" that "sh*t, I made the Yankee hat more famous than a Yankee can" and that "I bleed blue." While both statements are of doubtful veracity, his complaint in fact lists several events "for A-list celebrities" hosted at his 40/40 clubs, including Alex Rodriquez, Johnny Damon, and Alfonso Soriano. There is not a (current) Red Sox player on the list. Will a jury really believe that people might think Jay-Z allowed a famous player from the Yankees' most hated rival to use his trademark? Also, the "40-40 club" is a reference to a baseball player hitting 40 home runs and stealing 40 bases in a single season--a club, ironically, that Ortiz does not belong to. The term is not singularly identified with Jay-Z or his clubs. Just another hurdle to overcome.

In light of all the issues surrounding this case, the main question is this: of all Jay-Z's 99 problems, should Ortiz's nightclub in the Dominican Republic really be one?